M/S Dabur India Ltd v. M/S Alka Ayurvedic Pvt. Ltd

RAJIV SAHAI ENDLAW, J FEBRUARY 09, 2017 "gsr" (corrected & released on 2nd March, 2017)

*IN THE HIGH COURT OF DELHI AT NEW DELHI % Date of decision: 9th February, 2017 + CS(COMM) 1499/2016 DABUR INDIA LTD. ..... Plaintiff Through: Mr. Hemant Singh, Mr. Manish K. Mishra & Mr. Vipul Tiwary, Advs. Versus ALKA AYURVEDIC PVT. LTD. ..... Defendant Through: Mr. M.K. Miglani & Mr. Jithin M. George, Advs. CORAM:- HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW IA No.18291/2015 (of the plaintiff under Order XIV Rule 5 CPC) 1. The plaintiff in this suit for permanent injunction restraining infringement of trade mark and passing off and for ancillary reliefs, seeks framing of the following issues in addition to the issues framed on 6th October, 2009: "i. Additional Issue No.1: Whether the trade mark "PACHMOLA" registered in the name of the Defendant is invalid and liable to be cancelled? OPP ii. Additional Issue No.2: Whether use of the trade mark "PACHMOLA" by the Defendant amounts to infringement of the registered trade mark "HAJMOLA" of the Plaintiff? OPP" 2. The defendant has opposed the application by filing reply (and to which rejoinder has been filed by the plaintiff) and the counsels have been heard. 3. Vide ex parte order dated 17th December, 2008, while issuing summons of the suit, on the counsel for the plaintiff citing the judgment dated 4th July, 2008 in FAO(OS) No.82/2008 titled Pankaj Goel Vs. Dabur India Ltd. upholding the ex parte order of injunction restraining the appellant in that case from using the mark "RASMOLA" in relation to the same goods and further upon the counsel for the plaintiff informing that the Special Leave Petition preferred to the Supreme Court against the said judgment of the Division Bench had been dismissed, the defendant till the disposal of the application was restrained from using the trade mark "PACHMOLA" or any other mark deceptively similar to the trade mark "HAJMOLA" of the plaintiff in respect of the digestive tablets or other chewing tablets. 4. The defendant contested the suit as well as the application for interim relief and vide order dated 6th October, 2009 ex parte interim injunction was vacated with a direction to the defendant to maintain accounts of sales of digestive tablets / digestive preparations under the mark PACHMOLA and to file the same in this Court. Vide the same order dated 6th October, 2009, the following issues were framed in the suit: "1. Whether the defendants (sic for defendant) by use of the mark "PACHMOLA" are (sic for is) passing off their (sic for its) goods as that of the plaintiff? OPP 2. Whether the plaintiff is not entitled to the relief of injunction for the reasons of delay, acquiescence or waiver? OPD 3. Whether the plaintiff is entitled to any damages from the defendant and if so in what amount? OPP 4. Relief." 5. The plaintiff preferred FAO(OS) No.549/2009 against the aforesaid order but on 17th January, 2013 withdrew the same stating that the better course of action for the plaintiff would be to move this Bench for claiming additional issues and / or to seek amendment of pleadings so that the suit can be prosecuted, both for infringement and passing off. 6. The plaintiff thereafter applied for amendment of the replication and which was allowed vide order dated 14th November, 2014 and which order has attained finality. 7. The plaintiff has filed this application pleading i) that though the plaintiff had sued for injunction and other reliefs pleadings infringement of registered trade mark as well as passing off but on 6th October, 2009 issues with respect to infringement were not framed owing to the reasoning in the judgment of vacation of the earlier ex parte order, of the defendant having relied on registration in its favour in respect of PACHMOLA and the plaintiff in its replication having neither sufficiently raised the plea of the defendant"s registered trade mark PACHMOLA being invalid nor having initiated any proceedings for cancellation of the registration in favour of the defendant; ii) that the plaintiff however in the replication as amend